Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street) Ltd & Ors

A company’s “own name” for the Community trade mark defence may include an established trading name as well as its corporate name. A newly adopted name which conflicts with a registered mark is unlikely to satisfy the separate requirement of honest commercial practice.

Honesty requires an overall assessment. Relevant matters include the proprietor’s legitimate interests, likely confusion, the user’s knowledge, the mark’s reputation and precautions taken to prevent deception.

A foreign hotel or similar service business has English goodwill where its substantial English reputation attracts significant custom placed from England, including direct bookings and bookings through travel agents. Reputation or overseas patronage alone will not necessarily suffice.

The claimants operated the internationally known Hotel Cipriani in Venice and owned Community and United Kingdom trade marks for “Cipriani”. The first defendant opened a London restaurant trading as “Cipriani London” and, frequently, simply “Cipriani”.

Arnold J held that the registrations were valid, that the Community trade mark was infringed, and that the claims under section 56 of the Trade Marks Act 1994 and in passing off succeeded: [2008] EWHC 3032 (Ch).

The defendants appealed. They alleged bad faith, relied on the “own name” defence, challenged the United Kingdom registration and contended that the parties enjoyed concurrent English goodwill. The central issues were the scope of the own-name defence, honest commercial practice and the conditions under which a foreign service business possesses goodwill in England.

1. Appeal dismissed. The Community trade mark registration was valid. Bad faith under article 51(1)(b) had to be assessed from all relevant circumstances existing when the application was filed. Subjective intention was determined from objective circumstances. When registration was sought, there was no significant conflicting European use of “Cipriani” for hotels or restaurants, nor any relevant legally protected right of the defendants’ group which the registration would pre-empt.

2. The article 12(a) “own name” defence is potentially available for an established trading name as well as a company’s formal corporate name. The rule is not confined rigidly to the registered corporate name. The circumstances in which the trading name was adopted and the requirement of honest practices provide safeguards against piracy. A newly adopted corporate or trading name which conflicts with an existing registered mark is unlikely to satisfy that requirement. “Cipriani London” was the first defendant’s trading name, but “Cipriani” alone was merely an abbreviation and did not qualify as its own name.

3. Neither form of use accorded with honest practices. The assessment concerned all the circumstances and the duty to act fairly towards the proprietor’s legitimate interests. The defendants knew of the mark, used an identical sign for identical services in a market where the proprietor had goodwill, failed to obtain adequate advice, failed to address likely confusion and took no reasonable steps to prevent use of the abbreviation. The use therefore amounted to unfair competition. National passing-off rules could not determine this autonomous question of European law.

4. The United Kingdom registration was valid. The restaurant’s intervening use could not establish an earlier right under section 5(4)(a) of the Trade Marks Act 1994 because that use infringed the Community trade mark. The section 56 claim also succeeded.

5. Hotel Cipriani possessed English goodwill for passing-off purposes. Its substantial English reputation attracted a substantial body of English customers, supported by targeted marketing and significant bookings placed from England directly or through intermediaries. The defendants proved neither a sufficient association between Harry’s Bar and the “Cipriani” mark nor significant English custom for the New York restaurants. Concurrent goodwill was therefore absent, and the misleading use was likely to damage the claimant’s goodwill.

6. Lloyd LJ left open whether modern communications require a wider test for foreign service businesses. Stanley Burnton and Jacob LJJ agreed, and the former expressly endorsed that reservation.

1. Court of Appeal (Civil Division): The defendants’ appeal was dismissed unanimously on the validity and infringement of the Community trade mark, the validity of the United Kingdom trade mark, section 56 of the Trade Marks Act 1994 and passing off: [2010] EWCA Civ 110.
2. High Court, Chancery Division: Arnold J gave judgment for the claimants on all issues, granted injunctions whose effect was stayed pending appeal, and permitted an appeal except against findings of primary fact: [2008] EWHC 3032 (Ch).